HealthMarkets, Inc. v. Greg Keath
Claim Number: FA0807001215577
Complainant is HealthMarkets, Inc. (“Complainant”), represented by Jeanette
K. Ellis, of Jackson Walker LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <healthmarketsinsurance.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 16, 2008.
On July 16, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <healthmarketsinsurance.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
23, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 12, 2008
by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 19, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <healthmarketsinsurance.com> domain name is confusingly similar to Complainant’s HEALTHMARKET mark.
2. Respondent does not have any rights or legitimate interests in the <healthmarketsinsurance.com> domain name.
3. Respondent registered and used the <healthmarketsinsurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, HealthMarkets, Inc., is in the insurance industry and uses its marks in connection with insurance services. Complainant holds a registration for the HEALTHMARKET mark with the United States Patent and Trademark Office (“USTPO”) (Reg. No. 3,011,121 issued November 1, 2005). In addition, Complainant owns and operates a website resolving from the <healthmarkets.com> domain name.
Respondent registered the <healthmarketsinsurance.com> domain name on April 18, 2006. The disputed domain name resolves to a website that displays various hyperlinks to third-party websites, some of which are in direct competition with Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has sufficiently established rights in the HEALTHMARKET mark pursuant to Policy ¶ 4(a)(i) because Complainant holds a registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
The <healthmarketsinsurance.com> domain name contains Complainant’s entire HEALTHMARKET mark, merely adds an “s” at the end of the mark, and adds the generic term “insurance” after the modified mark. The Panel finds that neither adding the “s” nor adding the generic term “insurance” distinguishes the disputed domain name from Complainant’s mark for the purposes of confusing similarity under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <healthmarketsinsurance.com> domain name is confusingly similar to Complainant’s HEALTHMARKET mark under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
First, Complainant must make a prima facie showing that Respondent does not have any rights and legitimate interests in the <healthmarketsinsurance.com> domain name. Second, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. Based on its Complaint, the Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s website that resolves from the <healthmarketsinsurance.com> domain name merely displays various hyperlinks to third-party websites, some of which are in direct competition with Complainant. Accordingly, the Panel infers that Respondent receives click-through fees for the aforementioned hyperlinks. The Panel finds that this commercial benefit to Respondent from using a confusingly similar domain name is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services).
Furthermore, based on Respondent’s WHOIS information and the record at hand, there is no evidence to suggest that Respondent is commonly known by the <healthmarketsinsurance.com> domain name. Thus, the Panel finds that Respondent is not commonly know by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The website that resolves from the <healthmarketsinsurance.com>
domain name displays a list of hyperlinks, many of which advertise competing
insurance services. This use is likely
to disrupt Complainant’s business by diverting customers to the websites of
Complainant’s competitors. Therefore,
the Panel finds that Respondent’s registration and use of the <healthmarketsinsurance.com>
domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See
David Hall Rare Coins v.
Respondent’s use of the <healthmarketsinsurance.com>
domain name is also likely to confuse Internet users as to the source,
sponsorship, affiliation, or endorsement of the competing insurance services
advertised on the website that resolves from the disputed domain name. Respondent presumably receives click-through
fees for each redirected Internet user, and is therefore attempting to profit
off the goodwill associated with Complainant’s HEALTHMARKET mark. Therefore, the Panel finds that Respondent
registered and is using the <healthmarketsinsurance.com> domain name
in bad faith pursuant to Policy ¶ 4(b)(iv).
See Asbury Auto. Group, Inc. v.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <healthmarketsinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: September 2, 2008
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